1. Trade-marks and Video Games David Spratley October 1, 2014

2. The Plan trade-mark basics trade-marks and video games traditional issues non-traditional issues recap

3. Trade-mark Basics

4. What is a trade-mark? Trade-marks Act: a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others

5. So, what is a trade-mark? indicator of source - everything branded with the mark comes from the same source distinguish products or services of one business from those of another

6. So, what is a trade-mark? word(s), design or combination registrable; used national rights

7. Products, services and use each mark registered with products/services protection extends to those products/services … and beyond fame complicates everything

8. Products, services and use 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. (2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

9. Infringement unauthorized use → consumer confusion and unfair competition free-riding on someone else’s reputation “dilute” the strength and value of the mark and its reputation (“depreciation of goodwill” in Canada)

10. Infringement prevent use of identical or confusingly similar mark depends on “use” and “confusion” unchecked infringement can invalidate brand

11. Copyright? logos may also be protected by copyright if they are original artistic works brings a different set of issues from TMs

12. Protecting a trade-mark clearance searches application, objections, oppositions, registration registered vs. unregistered marks

13. Trade-marks and Video Games

14. Video Game Suppliers

15. Video Games

16. In Video Games

17. Video Game Trade-mark Issues: Traditional

18. November 15, 2001

25. Is this infringement? traditional circumstances and analysis are the marks too similar? would their use cause confusion? nothing really video-gamey about it

26. Video Game Trade-mark Issues: Not so traditional

29. Is this infringement? product placement? infringement? using a well-known brand in a game might give impression that the brand owner endorses or is affiliated with the game but is merely displaying a brand “use”?

30. What can we learn from the movies? George of the Jungle 2 villains use Caterpillar bulldozers Caterpillar Inc. sues temporary injunction application dismissed

31. What can we learn from the movies? infringement claim not likely to succeed no indication that Disney had used Caterpillar’s trade- marks and products to “poach or free-ride” on marks’ fame and goodwill to drive sales or consumer awareness of the movie

32. What can we learn from the movies? dilution claim not likely to succeed nothing suggested that Caterpillar’s products were shoddy or cast the products in a poor light movie was fictional work with fantastical elements, and the Caterpillar products were merely “inanimate implements” of the villains’ nefarious schemes and were not directly responsible for any unsavoury activity

33. What can we learn from the movies? “common phenomenon” for branded products to appear in movies and television shows this in itself is probably not trade-mark infringement or unfair competition Caterpillar v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003).

34. What can we learn from the movies? Dickie Roberts: Former Child Star David Spade’s character injures himself by improperly using a Slip ‘N Slide Wham-O, Inc. sues for TM infringement and dilution temporary injunction application dismissed

35. What can we learn from the movies? anyone watching would understand that Spade’s character was using the Slip ‘N Slide improperly, and would not think less of the brand because of it trade-mark formed part of the movie’s “jumble of imagery” but was not highlighted so as to exploit the mark’s value Wham-O v. Paramount Pictures Corp., 286 F. Supp. 2d 1254 (N.D. Cal. 2003)

36. What can we learn from TV? Heroes character injures hand in InSinkErator™ Emerson Electric sues NBC for trade-mark infringement and dilution show cast the disposer in an unsavoury light, irreparably tarnishing product

37. What can we learn from the movies and TV? merely displaying a mark (probably) not “use” nominative fair use (US): can use TM to describe a product; in Canada, just a question of “use” people will still sue you (at least in the US)

38. Video Game Trade-mark Disputes: Just Weird

39. Pokemon! POK Erythroid Myeloid ONtongenic

41. Recap

42. TMs apply to video game developers, publishers and products the same way as any other businesses or products clearance searches, registrations, disputes

43. Recap display of TMs in a game is more interesting authorized (product placement) or not? if unauthorized, may still not be TM infringement (consider copyright for logos)

44. THANK YOU! David Spratley 604.643.6359 dspratley@davis.ca Follow us @DavisLLP